Mark Robinson and Brenda Robinson v Henkel AG & Co KGaA

The applicants, Mark Robinson and Brenda Robinson, opposed the extension of protection of a trade mark owned by Henkel AG & Co KGaA. The dispute concerned whether the trade mark should be extended to cover certain goods, specifically those in Class 3, given the Robinsons' prior use and registration of a similar trade mark. The matter was heard by Benjamin Goldsworthy in the Federal Court of Australia.

The primary legal issue before the court was whether the extension of protection for Henkel AG & Co KGaA's trade mark should be refused, in whole or in part, under the *Trade Marks Act 1995* (Cth). This involved determining if the trade mark was substantially identical or deceptively similar to the Robinsons' earlier trade mark, and if the goods covered by the respective marks were similar. The court also considered various grounds for opposition, including sections 42(b), 43, 44, 58A, 58, 60, and 62A of the Act.

His Honour found that the trade mark was substantially identical and that the goods in Class 3 were similar to those covered by the Robinsons' earlier trade mark. Consequently, the court determined that the ground under section 44(3)(a) and 44(3)(b) of the Act was not applicable, but the ground under section 44 was established for Class 3 goods. No other grounds of opposition were established.

As a result, the court ordered that the extension of protection be refused for all goods in Class 3, but granted for all goods in Class 1.